Comments on: Some Musings on Patent Law

By: John

John — Thu, 28 Jul 2005 17:16:27 +0000

Intellectual property law has been tremendously distorted over the last 20+ years by Gates and Disney. The drug companies are cashing in.

If the plants (insert anything here) had been in use for ages by the local populationin in the gene rich area then they are not patentable since they are not new (a USPTO requirement).

I don't think that this is effectively true. I think that that rule is being muscled and jimmied too.

By: TangoMan

TangoMan — Wed, 27 Jul 2005 14:20:46 +0000

observer,

re: gene poor/gene rich – That’s why I made the comment that I thought the protests at the FAO probably had more to do with reviving the NIEO than they ever did with IP and International law.

By: observer

observer — Wed, 27 Jul 2005 12:37:53 +0000

George - I believe you are describing types of utility patents rather than separate categories of patents. The 3 types of patents are what I listed above: Utility, Design and Plant.

there's also a utility requirement for a patent: You can't just patent a molecule without claiming some use

Correct - which is why chemical intermediates are not patentable but a molecule such as a gene can have utility as a molecular weight marker (bp number). Utility is most often not a reason for rejection for a patent from the USPTO. If the inventors have proof (research data for example) that the gene did cause breast cancer then that can be its utility.

I must comment on the original post too. The gene poor/gene rich comments are quite silly. If the plants (insert anything here) had been in use for ages by the local populationin in the gene rich area then they are not patentable since they are not new (a USPTO requirement). No IP is being taken from the locals for the economic of others elsewhere. Even if the plants were patentable back when first introduced into a non-native environment, those patents would have run their course and the inventions would be in the public domain. At present, one has 20 years from filing for patent protection (with some adjustments available). Also of note is that in the US, patents are awarded to the first to invent not the first to file like elsewhere in the world. Thus, if a person in the gene rich area had invented something, someone in the USA would not be able to patent that invention; she/he was not the first to invent.

Cheers all

By: George Weinberg

George Weinberg — Wed, 27 Jul 2005 11:57:53 +0000

There's no breed patent. Statuory classes of patents are process, machine, manufacture, or composition of matter.

There's such a thing as a plant patent, but it's only for clones.

Incidentally, there's also a utility requirement for a patent: You can't just patent a molecule without claiming some use. I'd doubt if "causes breast cancer" counts as a use, but I guess "identifies a risk for breast cancer" would.

Really it's apallingly bad reporting to do a story on a patent without giving the patent number. There are a bunch of patents that mention BRCA2,
5,837,492 claims "An isolated DNA molecule coding for a BRCA2 polypeptide, said DNA molecule comprising a nucleic acid sequence encoding the amino acid sequence set forth in SEQ ID NO:2."

By: observer

observer — Wed, 27 Jul 2005 11:54:45 +0000

As I understand it, there are three kinds of patents:

1. A device
2. A method
3. A breed

Actually there are 3 types of patents but they are
1. Utility
2. Design
3. Plant

A utility patent covers your device, method and breed (unless your breed refers to plant).

35 USC 161 defines a plant patent
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_161.htm

35 USC 171 defines a design patent
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_171.htm

Here is an example of a gene patent
http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=/netahtml/search-bool.html&r=8&f=G&l=50&co1=AND&d=ptxt&s1=gene.TTL.&OS=TTL/gene&RS=TTL/gene

Surely patenting a molecule would only limit its manufacture or distribution?

Correct - a patent only gives one the right to prevent others from making, using, offering for sale, or selling the invention throughout the USA or importing the invention into the USA....

35 USC 154
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_154.htm

With a good patent lawyers and consultants you could patent anything

One doesn't need a patent agent or patent attorney to acquire a patent and the patent can be based on virtually any subject matter. (here is a great one "Method of exercising a cat" - which is literally shining a laser and hoping the cat follows it)
http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=/netahtml/search-bool.html&r=19&f=G&l=50&co1=AND&d=ptxt&s1=cat.TTL.&s2=exercise&OS=TTL/cat+AND+exercise&RS=TTL/cat+AND+exercise

As stated in Chakrabarty - anything under the sun that is man made is patentable. It really is quite easy to obtain a patent (see cat exercise method above). Obtaining a patent that actually has some commercial value is a completely different story. A qualified patent agent or patent attorney is usually required for patents for the filing of patents that may have monetary value.

By: YHN

YHN — Wed, 27 Jul 2005 07:14:56 +0000

1.) A price can't be assigned to raw germplasm because, while there may contain useful genes, until those genes are evaluated and traits identified, the germplasm is an unknown quantity.

Unknown quantities and lots are auctioned all the time. I'm thinking here of abandoned self storage lockers. You don't know what's in there but you have a good idea of the risk involved. (say 10 self storage lockers with nothing of value to one containing say for instance four high performance car tires and a collection of fancy rims.)

2.) The collection of germplasm doesn't deprive a country of a good or benefit. If utility isn't lost, then there is no claim for compensation.

Utility is lost if collection leads to a claim for exclusive use, i.e. a patent. Compensation is more about getting everyone with the power to poision the well that a "fair" aggangement has been reached.

By: Lady

Lady — Wed, 27 Jul 2005 01:37:53 +0000

With a good patent lawyers and consultants you could patent anything…which doesn’t seem right to me too and I still wonder if there are some limitations.

By: David Boxenhorn

David Boxenhorn — Wed, 27 Jul 2005 01:26:42 +0000

Surely patenting a molecule would only limit its manufacture or distribution? (Assuming you could get a patent on a naturally occurring, not synthetic, molecule, which doesn’t seem right to me.)

By: Lady

Lady — Wed, 27 Jul 2005 01:21:30 +0000

http://wbln0018.worldbank.org/eurvp/web.nsf/Pages/Paper+by+Henry/$File/HENRY+DRAFT.PDF

I think that here is the answer :) seems that it is not impossible to patent a gene as a synthetic chemical molecule, the invention of which patent law usually reward by rights over all possible applications

By: David Boxenhorn

David Boxenhorn — Wed, 27 Jul 2005 00:08:10 +0000

As I understand it, there are three kinds of patents:

1. A device
2. A method
3. A breed

In this case they have probably patented the device and method, NOT the gene, since they didn't "breed" it. That means that if someone can devise a test that doesn't infringe on their patent (device or method), they could use it.